DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This communication responds to the application and amended claim set filed November 03, 2023. Claims 1-14 are currently pending.
Drawings
The drawings are objected to because the single drawing is labelled as “Fig. 1.” “Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation "Fig." must not appear.” (37 CFR 1.84(u)(1).) The appropriate designation is “FIGURE” or “Figure.”
Election/Restrictions
Applicant’s election with traverse of Group I, claims 1-8 and 14, in the reply filed on August 10, 2026 is acknowledged. The traversal is on the grounds that a serious burden does not exist since the groups encompass similar subject matter which could be readily searched and examined together and no evidence of feasibility but just a conclusion statement and therefore not meeting requirements of MPEP 806.05(f)(B). The traversal is not found persuasive because the groups have divergent subject matter as recited in the restriction requirement. Specifically, group I and group III are related as process of making and product made. The inventions are distinct since the product as claimed can be made by another and materially different process (MPEP 806.05 (f)). It is necessary to search for the inventions in a manner that is not likely to result in finding art pertinent to the other inventions because different search queries would be required. For example, a search for the invention of Group II would involve utilizing the search query "melt-kneading or dry-mixing" which would not result in finding prior art pertinent the invention of Group I, which does not require “melt-kneading or “dry-mixing”. The statement “such as a solution based dispersion method” is more than a conclusory statement that demonstrates the product can be made by a different process – solution based dispersion. MPEP 803(II) and 806.05(f) state examiners “need not cite documents to support” to support the restriction requirement. Therefore, the requirement is still deemed proper and is therefore made FINAL. It is noted that the examiner would consider the rejoinder of the withdrawn claims that are commensurate in scope with the allowable claims of group I.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-8 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Shah et al., hereinafter Shah (US PG Pub 2014/0097917 A1 as listed on the IDS dated 4/16/2025).
Regarding claims 1-2, Shah teaches articles comprising carbon nanostructures polymer composite surfaces that are electrically conductive, wherein the polymer composite comprises a polymer matrix and a plurality of carbon nanostructures (which correspond to the resin composition), wherein each carbon nanostructure include a plurality of carbon nanotubes that are branched, crosslinked and share common walls with one another (abstract, claims 211, 0 and 21, Fig. 4A,5A). Shah teaches that the polymer matrix in which the carbon nanostructure is distributed is not particularly limited and includes polymers such as polytetrafluoroethylene, ABS, epoxy, polyester, among others and any combinations thereof [0058].
Shah does not teach the claimed components together in one embodiment.
However, Shah does teach the polymer matrix including ABS and the carbon nanostructure are used in the composition together. It would have been obvious to substitute polytetrafluoroethylene for ABS in the example because Shah specifically teaches that these polymers can be substituted and it would be expected to have a reasonable expectation of success given that Shah teaches them as potential polymer matrices for use in the different embodiments.
Regarding claim 3, Shah teaches the content of the carbon nanostructures in the polymer composite ranges between about 3% to about 15% by weight of the polymer composite (claims 12-13).
Shah and the claims differ in that Shah does not teach the exact claimed ranges for the content of the carbon nanostructures as recited in the instant claim.
However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Shah overlaps the instantly claimed ranges (0.001 to 10 mass%) and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding claims 4 and 7-8, Shah is silent on the volume resistivity, the number of folds resistance and the melt flow rate, as recited in the instant claims.
In view of the substantially identical resin composition of Shah, the composition of Shah is expected to possess the claimed volume resistivity, the claimed number of folds resistance and the claimed melt flow rate, because the volume resistivity, the number of fold resistance and the melt flow rate are inherent properties. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claim 5, Shah teaches the polymer composite comprises additives including a filler material in the interstitial space of the carbon nanostructures ([0060], [0063]), as required by the instant claim.
Regarding claim 6, Shah teaches the polymer composite comprises a polytetrafluoroethylene, ABS, among others and any combination thereof [0058], thereby reading on the resin composition comprising a polymer other than the fluororesin.
Regarding claim 14, Shah teaches that the polymer composite is fabricated using extrusion, injection molding [0033], thereby reading on the molded body having the resin composition molded.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure (listed on the IDS dated 04/16/2025).
Shah et al. (US 2014/0094541 A1)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSEPH DEL SOLE can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
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